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Decision of the German Federal Supreme Court “Abdichtsystem” (Sealing system)

Patent infringement of a German patent outside Germany

FACTS

The plaintiff is owner of the German part of the European patent EP 1 291 158, which concerns a system for the sealing of inflatable articles, in particular tires.

The defendant is based in Italy. The defendant has delivered sealing systems to a third party, which marketed vehicles in Germany, including a German manual for the sealing systems. In addition, the defendant has also directly imported the sealing systems into Germany.

The plaintiff has asked in particular for a cease and desist order, a recall and a destruction of a delivery of the defendant to the third party based in a foreign country, where the defendant knows that the products are subsequently imported into Germany.

DECISION

According to the Federal Supreme Court, a supplier based in a foreign country is not generally obliged to check and control the further use of its products by a recipient. However, the supplier is obliged to check the situation in case there are concrete hints that the recipient will import and market the product in Germany.

An example of a concrete hint is that the supplier has been informed about a happened or a coming delivery into Germany. Other concrete hints might be in case that the amount of products is too large to be marketed only in markets without IP protection or in case that there is a visible correlation of the delivered products with the potentially patent infringing acts in Germany of the recipient.

In such a case, the supplier is obliged to ask the recipient about the delivery into Germany and to point to a potential patent infringement in Germany. In case the supplier does not receive a plausible answer, the supplier might expect, even without positive knowledge, that he participates at a patent infringement of the recipient. In such a situation the supplier performs, with the continued supply of the products to the recipient, a patent infringement of the German patent.

In the above case, the Federal Supreme Court considered that the difference between the number of sealing systems imported into Germany and the number of sealing systems available in Germany are a concrete hint. The defendant itself had argued in another proceeding that he may have severe economic consequences if a cease and desist order would be executed in Germany, even though they import only a small amount of the products directly into Germany. The court considered that in case the argument of the defendant is correct, this would be a concrete hint.

Further, the Federal Supreme Court has clarified that even in case of a support of a patent infringement by negligence, that there is not necessarily an unrestricted right for a cease and desist order for acts, which are, as such, not a patent infringement, like in similar cases for indirect infringement.

Finally, the Federal Supreme Court decided, in case that a patent infringement took place by the recipient, that the defendant should render account for all deliveries to that recipient.

CONCLUSION

With this decision, the Federal Supreme Court tightens the obligations for foreign companies which deliver another foreign company with products, which might be imported into Germany.

Please note that this is only a rough summary of the decision and does not contain every detail of the decision and does not constitute a legal advice.